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Wednesday, 21 June 2017

If
you were going to ask a friend to search something online, what
word or phrase would you use to direct him or her to conduct that search? "IPKat it", of course! Kat
jokes aside, this question was at the center of the recent Ninth
Circuit Court of Appeals (Ninth Circuit) judgment in Elliott
v. Google.

The dispute concerned the attempt of Mr.
Gillespie (later joined in the suit by Mr. Elliott) to acquire 763
domain names such as “googledisney.com”
and“googlebarackobama.com”, all containing the word “google”.
Google Inc. objected to the registration and filed a complaint of
domain name infringement, or “cybersquatting”, before the US
National Arbitration Forum. Upon refusal, the claimants petitioned
the Arizona District Court for the cancellation of the Google trade
mark on grounds of “genericide”. In other words, according to the
claimants, the Google trade mark would have lost its uniqueness as it
is used as a verb in common language. In fact, in the cross-motions
for summary judgment, the claimants stated that the use of a trade mark
as a verb, i.e. “I will google this”, constitutes genericness
automatically. On grounds of insufficiency of evidence provided to support this argument, the
District Court sided with Google and dismissed the claim. The
claimants decided to appeal the judgment, focusing on two arguments in
particular:

the
District Court misapplied the primary significance test + it failed
to recognize the importance of verb use; and

the
District Court impermissibly weighed the evidence in the granting of
the summary judgment.

The
question which then the Ninth Circuit had to answer was: Are there any genuine issues of material fact and did the District Court apply the relevant substantive law?

The
Ninth Circuit ultimately sided with the District Court's findings that the evidence before it from the claimant was insufficient.

With
regards to the first point of appeal, the circumstances surrounding
Mr. Elliott's claim are undeniable - people do actually use the verb
“to google”. What was lacking in the claim, as the Ninth Circuit noted, is
the fact that it was not made with regards to a particular type of
good or service. Lanham Act provisions supported Google's view. Those provisions clearly state that in order for a mark to be considered
generic the mark must lose its primary significance towards less than all of
the goods and services for which the mark is registered (15 U.S.C.
§1064(3)).

With
arbitrary or fanciful marks, the word used as trade mark has its own
meaning and it therefore has its own place in language (the Ninth Cirucit in
this case used the example of the trade mark IVORY, which is a trade
mark for soap but also is the material of the tusks of elephants
Abercrombie & Fitch Co. v. Hunting World, Inc., F.2d 4, 9
n.6). Thus, it is essential when making a generic trade mark claim to
clearly identify the goods and services related to the product: in
fact, a mark maintains its validity if the public can describe “who”
the mark is, conversely, the mark loses its validity if the public
only understands “what” the service is Kellog Co. v. Nat'l
Biscuit Co., 305 U.S. 111, 118 (1938). Only implying that the
fact that “to google” is used as a verb is not enough, the
primary significance test must be shifted to inquire whether the
public, when using such verb, implies a generic way of referring to
search engines or whether it identifies the Google search engine in
particular. In this regard, the Court noted that it is not possible
to partake to the public's inner thought process and thus discern
whether they are using the verb in a “discriminate”, or with a
particular source in mind, or an “indiscriminate”, no particular
source in mind, manner (the same reasoning was followed in the
Coca-Cola Co. v. Overland Inc., 692 F.2d 1250 (9th Cir. 1982),
where it was argued that customers in a restaurant when ordering “a
COKE” could refer to any type of cola beverage).

A googol of Kats

This Kat also
thinks that an argument could have been made with reference to the
word googol, the very word from which the trade mark name Google
originated from. A googol, in mathematical lingo, is a 1 followed by
100 zeros. In fact, the
intent behind the choice of the trade mark Google as a search
engine was to indicate the act of sifting through an immense amount
of data, a googol of data with a small typo. Googol is then a word
with its own meaning and could very well be used as a verb, to
indicate, for example. the multiplication of a number by a very large amount. It
is certainly not a common usage word, but nonetheless it exists and
it pertains to a completely different domain, thus underlining the
importance of identifying the goods and services involved.

The Ninth Circuit found that the use of a trade mark as verb does not constitute
genericness automatically and that the claimant did not produce enough
evidence to support its argument.

As to
the second point of appeal, the Court determined that the evidence put
forward by the claimant was insufficient as to “how the public
primarily understands the word itself”. The claimant produced four categories of evidence: (i) consumer surveys (of which only one was considered
acceptable); (ii) use by the media and by consumers; (iii) use in dictionaries; and (iv) evidence from Google itself encouraging users to “keep googling”. All evidence was dismissed.

The question reported in the
opening of the post was considered as only supporting the statement
that the verb “to google” might be used indiscriminately, but
that does not necessarily imply that it refers to all search engines. On the second point, use by the media and consumers, the claimant cited as evidence the song Bottlez (rEVOLVEr, RCA Record 2001), where the singer T-Pain says "to google [his] name”. The Ninth Circuit held that it was impossible to partake to the singer's inner thought process. It was also impossible to determine if T-Pain was referring to Google or to another search engine. Other examples of use in the media and by consumers cited by the claimant were of the use of the phrases such as “to google on eBay” and “to google on Facebook”. These were rejected as they were not disclosed during discovery and, in any event, they were considered largely irrelevant.

The dictionary
evidence was not decisive. This was because the sources cited refer to the verb “to google” - the secondary meaning of the
trade mark which only indicates the act of searching something through a
search engine. As for the last point, the claimant was, again, not able to
show what was on the mind of Mr. Larry Page when he wrote the “Google
Friends Newsletter”.

Finally,
Elliott argued that there is no efficient alternative to the verb “to
google” in order to describe the act of searching on the internet. This claim was rejected as the Court held that for this to be
true it would require the search engines to call themselves “a
google” but none of them do. It reinstated that
“genericide” does not occur “until the trademark has gone so
far toward becoming the exclusive descriptor of the product that
sellers of competing brands cannot compete effectively without using
the name” TY Inc. v. Softbelly's Inc., 353 F.3d at 531.

This
Kat also thinks that the use of the Google mark has a hard time
being compared to other marks which have become generic because
searching on the internet is an active process. A user will have to physically type the name of the search engine or
have it previously set as a homepage, as opposed to for example asking
for an aspirin at the drug counter or looking for shredded wheat cereal at
the supermarket. Furthermore, there is a difference between traditional and vertically integrated search engines: search engines like Google look for information across the web, while eBay, for example, will look into its vertically integrated database. As the Court pointed out in the judgment, the goods and services for which a trade mark is registered are key to a claim of "genericide". If eBay services, here taken as an example, are mixed up with the inherently different services of Google it is clear that that claim is void.

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